Ex Parte Bortlik et al

Board of Patent Appeals and Interferences

Aug 4, 2011

10568704 (B.P.A.I. Aug. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KARLHEINZ BORTLIK, ELIANE DURUZ,
ERIC KOLODZIEJCZYK,
and MARIE-ROSE FERNANDEZ-GRAF
__________

Appeal 2011-003313
Application 10/568,704
Technology Center 1600
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a natural
lycopene concentrate. The Examiner rejected the claims as indefinite and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“Lycopene is a natural pigment . . . It is known for its bioactive
properties, and in particular for its antioxidant role.” (Spec. 1, ll. 6-10.)
The Claims
Claims 1, 3-5 and 9-11 are on appeal. Claim 1 is representative and
reads as follows:
1. A natural lycopene concentrate that is water-
soluble at room temperature comprising at least 1
mg of lycopene per g of the said concentrate, not
more than 30% proteins, not more than 30%
polysaccharides, not more than 10% organic acids,
and at least 30% of lipid compounds, wherein the
concentrate is ingestible, in powder form and
isolated from fibers and other insoluble
compounds by solid-liquid separation, and wherein
the concentrate is extracted from a lycopene-
containing material without using a solvent.

The issues
A. The Examiner rejected claims 1, 3-5, and 9-11 under 35 U.S.C. § 112,
second paragraph (Ans. 3-4).
B. The Examiner rejected claims 1, 3-5, and 9-11 under 35 U.S.C. §
103(a) as obvious over Kesharlal
1
(Ans. 4-6).
A. 35 U.S.C. § 112, second paragraph
The Examiner finds that the “term „natural lycopene concentrate‟ in
claims 1, and 9-11 is a relative term which renders the claim indefinite. The
term „natural‟ is not defined by the claims, the specification does not provide

1
Kesharlal et al., US 6,224,876 B1, issued May 1, 2001.
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a standard for ascertaining the requisite degree” (Ans. 3). The Examiner
finds that Appellants‟ Specification “recites „The supernatant is recovered
and its pH is adjusted to 7 with NaOH‟ (lines 5-10). Since NaOH does not
exist in nature in tomato, it is not clear whether the product could still be
called "natural lycopene concentrate‟” (id. at 3-4).
Appellants contend that “the skilled artisan would immediately
appreciate that a „natural‟ lycopene concentrate is a lycopene concentrate
that has not be subjected to technological treatments that would modify its
native characteristics” (App. Br. 12). Appellants contend that “the
specification clearly defines a „natural‟ lycopene concentrate as a lycopene
concentrate that „has only been subjected to technological treatments which
do not modify its native characteristics‟” (id.).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner‟s conclusion that claim 1 is indefinite?
Findings of Fact
1. The Specification teaches that the “aim of the present invention
is to provide a „natural‟ product with increased bioavailability, that is to say
that the product has only been subjected to technological treatments which
do not modify its native characteristics” (Spec. 2, ll. 4-8).
2. The Specification teaches that “the concentrate is a lycopene
powder which is water-soluble at room temperature, this being without using
a solvent during the process in order to preserve the natural nature of the
product in order to provide the consumer with a concentrate with a high
bioactivity” (Spec. 3, ll. 27-32).
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3. The Specification teaches that it “is possible to treat the said
liquid by adding calcium in order to obtain a gel because this addition will
have the effect of a gelling of the polysaccharides” (Spec. 5, ll. 2-5).
4. The Specification teaches that the “paste is alkalinized with
demineralized water and a base of the NaOH type until a pH of between 6
and 9 is obtained” (Spec. 5, ll. 15-17).
5. The Specification teaches that after boiling the paste and a
solid-liquid separation, the “filtrate recovered is a solution containing
dispersed lycopene. It is acidified with an acid of the citric acid type to a pH
of between 3.5 and 5 and more preferably between 4 and 4.5” (Spec. 5, ll.
19-31).
6. The Specification teaches that the “present invention relates to a
natural lycopene concentrate, which is water-soluble at room temperature
while lycopene was up until now fat-soluble. This water-solubility is
obtained without adding surfactants” (Spec. 2, ll. 15-19).
7. The Specification teaches that the “lycopene is now water-
soluble because it has formed a complex with proteins of the medium and
with polysaccharides” (Spec. 6, ll. 4-6).
Principles of Law
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

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In Miyazaki, the Board stated that
rather than requiring that the claims are insolubly
ambiguous, we hold that if a claim is amenable to two or
more plausible claim constructions, the USPTO is justified
in requiring the applicant to more precisely define the metes
and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.

Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008).
Analysis
The dispute centers over whether the term “natural lycopene
concentrate” is definite. The Specification provides a definition of “natural”
teaching that the “aim of the present invention is to provide a „natural‟
product with increased bioavailability, that is to say that the product has only
been subjected to technological treatments which do not modify its native
characteristics” (Spec. 2, ll. 4-8; FF 1).
Therefore the touchstone for whether a lycopene concentrate is
“natural” according to Appellants‟ Specification is whether native
characteristics of the lycopene have been altered.
The Specification teaches that the “lycopene was up until now fat-
soluble” (Spec. 2, ll. 15-19; FF 6). Thus, the Specification suggests that one
native characteristic of lycopene is that it is fat-soluble, not water soluble
(FF 6).
After a series of chemical and physical processes treating the lycopene
containing product (see FF 3-5), the Specification teaches that the “lycopene
is now water-soluble because it has formed a complex with proteins of the
medium and with polysaccharides” (Spec. 6, ll. 4-6; FF 7).
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The Specification teaches that the resultant lycopene is no longer fat-
soluble, but rather is water soluble (FF 7).
This change from fat solubility to water solubility directly contradicts
the definition laid out in the Specification that “natural” only refers to
treatments which do not modify its native characteristics (FF 1). Here, a
native characteristic of lycopene, that it is soluble in fat (FF 6), has been
altered so that the lycopene is soluble in water (FF 7). Thus, the definition
of “natural” in the Specification (FF 1) is contradicted by the change in
behavior of the lycopene as taught in the Specification (FF 2-7).
Therefore, consistent with Miyazaki, at least two interpretations of
“natural” are possible. A first interpretation is where “natural” is interpreted
so that the treatments do not modify native characteristics such as solubility
in fat or water as per the definition in the Specification (FF 1). A second,
different, interpretation is where “natural” is interpreted to permit
manipulations which modify the native characteristic of solubility in fat or
water, which is the actual result performed by the Specification (FF 7). The
presence of two reasonable but inconsistent interpretations of “natural” in
light of the Specification supports the conclusion that the term “natural” is
indefinite in this limited and unusual fact pattern.
Appellants “submit that when the claims are read in view of the
specification, the skilled artisan would immediately appreciate that using
NaOH to alkalinze [sic] a lycopene-containing composition, or acidifying a
filtrate prior to centrifugation clearly does not change the native
characteristics of the ultimate lycopene-containing composition” (App. Br.
13).
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We are not persuaded, since the lycopene is changed from fat soluble
to water soluble, which is reasonably understood as a change in the native
characteristic of lycopene (FF 6-7).
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that claim
1 is indefinite.
B. 35 U.S.C. § 103(a) over Kesharlal
The Examiner finds that
Kesharlal et al teach fresh hard, good quality reddish
colored “Desi Red” carrots . . . were selected and washed
thoroughly with water. The sorted and washed carrots (1.0
kg) were subjected to crushing in a fruit mill to provide a
comminution which was subjected to pressing through a
filter press for the purpose of separating the pulp from the
juice to provide a juice (ca. 600 ml) (thus water soluble at
room temperature, thus the concentrate is extracted form a
lycopene-containing material without using a solvent, thus a
solid-liquid separation). To the juice, 3 g of adipic acid was
added with stirring (thus not more than 10% organic acid).
To the resulting mixture was added 60 g of sorbitol and the
mixture was subjected to centrifuging to provide paste (ca.
17.2 g). The paste was dried under high vacuum. Pulverizing
of the solid material and sieving gave the carotenoid powder
(thus ingestible, thus in a powder form) of the invention

(Ans. 4-5).
The Examiner finds that “though Kesharlal et al do not
explicitly teach not more than 30% protein, in Example 3, Kesharlal et al
teach the protein range from different supplies contain 10-50% protein” (id.
at 5). The Examiner finds it obvious “to choose a particular protein content
carrot from different carrot species or supplier” (id. at 6).
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Appellants contend that “Kesharlal fails to disclose or suggest natural
lycopene concentrates comprising at least 1 mg of lycopene per g of the said
concentrate, not more than 30% proteins, not more than 30%
polysaccharides, not more than 10% organic acids, and at least 30% of lipid
compounds” (App. Br. 15). Appellants contend that “[a]t best, Kesharlal
discloses a composition containing 10-50 g proteins per 100 g of isolated
powder for carrots. See, Kesharlal, column 4, lines 27-39. Every specific
example in Kesharlal, other than the range of amounts for carrots, uses an
amount of proteins that is greater than 30%” (id.).
Appellants “submit that the skilled artisan would have no reason to
modify Kesharlal to arrive at the present claims because Kesharlal teaches
away from the present claims” (id. at 16). Appellants contend that
“Kesharlal clearly discloses that protein amounts in the range of 30-50% are
acceptable. However, this is in direct contrast to the present claims that
explicitly require „no more than 30% proteins.‟ As such, the disclosure of
Kesharlal clearly teaches away from the present claims” (id.). Appellants
“submit that such an explicit disparagement is not required in order for a
reference to teach away from a claimed invention” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Kesharlal renders claim 1 obvious?
Findings of Fact
8. Kesharlal teaches that
“Desi Red” carrots with a smooth surface, excluding those
that were found defective, were selected and washed
thoroughly with water. The sorted and washed carrots (1.0
kg) were subjected to crushing in a fruit mill to provide a
comminution which was subjected to pressing through a
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filter press for the purpose of separating the pulp from the
juice to provide a juice (ca. 600 ml). To the juice, 3 g of
adipic acid was added with stirring. To the resulting mixture
was added 60 g of sorbitol and the mixture was subjected to
centrifuging to provide paste (ca. 17.2 g). The paste was
dried under high vacuum. Pulverizing of the solid material
and sieving gave the carotenoid powder of the invention

(Kesharlal, col. 7, ll. 54-65).
9. The Examiner reasonably finds that the extraction detailed
above was performed without a solvent and by solid liquid separation (see
Ans. 5).
10. Kesharlal teaches the “[c]omposition per 100 g Product from
„Desi Red‟ Carrots (Example 1)
”
(Kesheral, col. 8, ll. 1-21).
11. Kesharlal teaches that the composition of Example 1 has 700
mg of lycopene per 100 g of product “(thus 7 mg/g; thus at least 1 mg of
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lycopene per g)” (see FF 10, Ans. 5). Kesharlal also teaches that the
composition of Example 2 has 30.3 % lipid (see Kesharlal, col. 9, l. 40; Ans.
5).
12. Kesharlal teaches ranges for each component in Example 3 as
reproduced below:

The table in Example 3 provides specific ranges of compositions from
carrots (Kesharlal, col. 8, l. 60 to col. 9, l. 15).
13. Kesharlal teaches that the range of lycopene in carrots is from
10 to 2000 mg per 100 g product (or 0.1 to 20 mg per g) (FF 12).
14. Kesharlal teaches that the range of lipids in carrots is from 20 to
40 g per 100 g product or 20 to 40% (FF 12).
15. Kesharlal teaches that the range of proteins in carrots is from 10
to 50 g per 100 g product or 10 to 50% (FF 12).

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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” 550
U.S. at 421.
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of
obviousness ….
Selecting a narrow range from within a somewhat broader
range disclosed in a prior art reference is no less obvious
than identifying a range that simply overlaps a disclosed
range. In fact, when, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is
even more compelling than in cases of mere overlap. The
normal desire of scientists or artisans to improve upon what
is already generally known provides the motivation to
determine where in a disclosed set of percentage ranges is
the optimum combination of percentages.

In re Peterson, 315 F.3d 1325, 1329-1330 (Fed. Cir. 2003).
Analysis
Kesharal teaches a concentrate with at least 1 mg of lycopene per g
(FF 10-11) which does not have more than 30% polysaccharides (FF 11-12)
and at least 30% lipid (FF 11) and which is ingestible, in powder form, and
isolated by solid-liquid separation without using a solvent (FF 8-9).
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Kesharal exemplifies ranges of compositions including 10-50%
protein (FF 12, 15). Applying the Peterson standard of obviousness of
ranges to the findings of fact, we conclude that an ordinary artisan would
have reasonably found it obvious to select a range of protein content from 10
to 30% in Kesharlal since Peterson teaches that “even a slight overlap in
range establishes a prima facie case of obviousness.” Peterson, 315 F.3d at
1329. Here, where the prior art range for percent of protein substantially and
almost completely overlaps the claimed range, Peterson suggests that the
obviousness conclusion is even more compelling. See Peterson, 315 F.3d at
1330.
Appellants contend that “[a]t best, Kesharlal discloses a composition
containing 10-50 g proteins per 100 g of isolated powder for carrots. See,
Kesharlal, column 4, lines 27-39. Every specific example in Kesharlal, other
than the range of amounts for carrots, uses an amount of proteins that is
greater than 30%” (App. Br. 15).
We are not persuaded. Example 3 provides a specific teaching of
actual carrots with ranges of proteins between 10 and 50% (FF 12, 15).
With this specific teaching of a range of proteins, selection of the particular
values claimed by Appellants from within that range reasonably establishes
a prima facie case of obviousness, consistent with Peterson, 315 F.3d at
1329. Appellants have provided no evidence to rebut the prima facie case of
obviousness.
Appellants contend that “Kesharlal clearly discloses that protein
amounts in the range of 30-50% are acceptable. However, this is in direct
contrast to the present claims that explicitly require „no more than 30%
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proteins.‟ As such, the disclosure of Kesharlal clearly teaches away from the
present claims” (App. Br. 16). Appellants “submit that such an explicit
disparagement is not required in order for a reference to teach away from a
claimed invention” (id.).
We are not persuaded. Appellants‟ statement incorrectly characterizes
the law and facts. In Dystar, the court found that “[w]e will not read into a
reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). In accord is Fulton, where the court found
that the “prior art‟s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Thus, for the prior art to teach away, there must be some explicit
teaching which criticizes, discredits, or somehow discourages the obvious
solution. Appellants have not identified, nor do we find, such a teaching in
Kesharlal. The teaching that protein levels in the amount of 30-50% are
acceptable is not a teaching away. Instead, the broader teaching of 10-50%
protein content renders the claims prima facie obvious according to
Peterson, 315 F.3d at 1329. Disclosed examples and preferred embodiments
do not constitute a teaching away from a broader disclosure or non-preferred
embodiments. See In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
Conclusions of Law
The evidence of record supports the Examiner‟s conclusion that
Kesharlal renders claim 1 obvious.
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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 112,
second paragraph. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the
rejection of claims 3-5, and 9-11, as these claims were not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Kesharlal. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm
the rejection of claims 3-5, and 9-11, as these claims were not argued
separately.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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